VOLUME 2 | ISSUE 3 MARCH 2012

Trademark Review

VOLUME 2 | ISSUE 9 SEPTEMBER 2012

Swatch Cannot Stop Use of SWAP for Watch Faces and BandsSwatch suffers a second loss in its objection to use and registration of the mark for watch faces, ribbon watch bands, slide pendants and beaded watch bands. After losing its opposition before the Trademark Trial and Appeal Board (“TTAB”), Swatch AG filed a civil action before the District Court for the Eastern District of Virginia appealing the dismissal of its opposition and bringing new claims that included trademark infringement and dilution. Swatch’s objection was based on its SWATCH mark used on watches, clocks and parts. The district court review of the TTAB decision is based on the record before the TTAB. Swatch, however, was able to introduce new evidence to support its new claims. Nevertheless, the district court affirmed the TTAB ruling and found no likelihood of confusion or dilution. The court found that Swatch’s SWATCH mark is strong, but that SWATCH and SWAP are not confusingly similar. Further, although the court found a similarity between the general types of goods sold under the marks, it found a de minimis overlap in trade channels and no overlap in advertising channels. The court noted a lack of any evidence of actual confusion despite concurrent use of the marks since 2003. The court also found that Swatch’s dilution claim must fail because, even assuming Swatch’s mark was famous at the relevant time and assuming the goods are associated, Swatch did not establish that use of SWAP impairs the distinctiveness of the SWATCH mark. Swatch AG et al. v. Beehive Wholesale LLC, (E.D.Va. August 2012).

BAGEL THINS Falls Short of Reaching Trademark StatusThe TTAB ruled that despite significant sales and advertising in a short period of time, BAGEL THINS has not yet acquired distinctiveness and is not entitled to registration on the Principal Register. The applicant sought registration of BAGEL THINS for “bakery products, not including cookies.” The Board found that the mark was merely descriptive of the actual product. But, the applicant’s evidence of acquired distinctiveness included evidence of over $61 million in retail sales and over $5 million spent in marketing during 2010, the first year of sales of its BAGEL THINS product. Despite the product’s success in its first year, the Board noted that the product had only been on the market for little more than a year. Further, the applicant did not submit any consumer surveys or declarations demonstrating consumer recognition of the mark. The Board found that although the applicant fell short of establishing the term has acquired distinctiveness, the mark is capable of acquiring distinctiveness and the Board will permit registration on the Supplemental Register. In re: Grupo Bimbo SAB de CV (TTAB August 2012).

In This Issue• Swatch Cannot Stop Use of SWAP for Watch Faces and Bands

• BAGEL THINS Falls Short of Reaching Trademark Status

2

Over 95% of our litigators hold technical degrees, including electrical engineering, computer science, mechanical engineering, chemistry, chemical engineering, biochemistry, biology, and physics. Many of our litigators are former Federal Circuit or district court clerks. With eight offices, Knobbe Martens represents clients in all areas of intellectual property law.• Exclusive practice in the area of intellectual property since 1962 • More than 250 lawyers, many of whom have advanced degrees in various technologies• Internationally recognized leaders in IP across a vast spectrum of technology areas

Who We Are

© 2012 Knobbe Martens Olson & Bear LLP, a Limited Liability Partnership including Professional Corporations. All rights reserved. The information contained in this newsletter has been prepared by Knobbe, Martens, Olson & Bear, LLP and is for general informational purposes only. It does not constitute legal advice. While every effort has been made to ensure the accuracy of the information contained in this newsletter, Knobbe Martens Olson & Bear LLP does not guarantee such accuracy and cannot be held liable for any errors in or any reliance upon this information. Transmission of this newsletter is neither intended nor provided to create an attorney-client relationship, and receipt does not constitute an attorney-client relationship. You should seek professional counsel before acting upon any of the information contained in this newsletter.

knobbe.com

Orange County

Los Angeles

San Diego

Riverside

San Francisco

Seattle

Silicon Valley

Washington DC

Knobbe Martens Offices